UNITED NATIONS CONFERENCE ON TRADE AND DEVELOPMENT

Transcription

1 UNITED NATIONS CONFERENCE ON TRADE AND DEVELOPMENT Dispute Settlement World Intellectual Property Organization 4.2 Domain Name Dispute Resolution

2 ii Dispute Settlement N O T E The Course on Dispute Settlement in International Trade, Investment and Intellectual Property consists of forty modules. This module has been prepared by Mr. Torsten Bettinger at the request of the United Nations Conference on Trade and Development (UNCTAD). The views and opinions expressed in this module are those of the author and not necessarily those of the United Nations, WTO, WIPO, ICSID, UNCITRAL or the Advisory Centre on WTO Law. The designations employed and the presentation of the material do not imply an expression of any opinion whatsoever on the part of the United Nations concerning the legal status of any country, territory, city or areas or of its authorities, or concerning the delimitations of its frontiers or boundaries. In quotations from the official documents and the jurisprudence of international organizations and tribunals countries are designated as reported. The United Nations holds copyright to this document. The course is also available in electronic format on the UNCTAD website ( Copies may be downloaded free of charge on the understanding that they will be used for teaching or study and not for a commercial purpose. Appropriate acknowledgement of the source is requested. UNCTAD/EDM/Misc.232/Add.35 Copyright United Nations and World Intellectual Property Organization, 2003 All rights reserved

3 4.2 Domain Name Dispute Resolution iii TABLE OF CONTENTS Note ii What You Will Learn 1 Objectives 3 1. Domain Names and the Domain Name System The development of the domain name system How does the domain name system work? The structure of a domain name Generic top-level domains (gtlds) New gtlds Country code top-level domains (cctlds) Second-level domains Third and fourth-level domains The growth in domain name registrations 8 2. Need for an Alternative Dispute Resolution Procedure The conflict between domain names and intellectual property rights in signs The phenomenon of cybersquatting Limitations of court litigation in combating cybersquatting 9 3. Creation of the Uniform Domain Name Dispute Resolution Policy (UDRP) Origins Final Report of the WIPO Internet Domain Name Process Adoption of the UDRP Entry into effect of the UDRP Experience of the WIPO Center Principal Characteristics and Scope of the UDRP Which disputes are covered? Which top-level domains are governed? What are the major advantages? How does the UDRP become binding on the domain name registrant? What remedies are available? Overview of the UDRP Procedure Legal framework Stages in the procedure UDRP procedural flowchart Procedural Issues Does a party s submission have to be prepared and submitted by a lawyer? Which party carries the burden of proof and what is the standard of proof? Are in-person hearings provided for? Is the UDRP proceeding confidential? 23

4 iv Dispute Settlement 7. UDRP Complaint Where can a Complaint be submitted? Is there a standard format in which a Complaint should be submitted? In what language should the Complaint be submitted? What information should be included in the Complaint? Can a Complaint include more than one domain name? Where can one access information on the registrant of a domain name? UDRP Response Is there a standard format in which a Response should be submitted? What information should be included in the Response? How many days does a Respondent have to file a Response? How can a Respondent demonstrate rights to or legitimate interests in the domain name that is the subject of the Complaint? What happens if the Respondent fails to submit a Response or submits its Response after the deadline? UDRP Fees How are the dispute resolution service provider s fees for a domain name dispute calculated? Role of the UDRP Dispute Resolution Service Provider Procedural involvement Impartiality Role of the UDRP Administrative Panel What is an Administrative Panel? Who are the Panelists? When is the Administrative Panel appointed? How is the Administrative Panel appointed? Appointment considerations Administrative Panel Decision What decisions can the Administrative Panel take? What is a finding of reverse domain name hijacking? How long does it take to get the Administrative Panel decision? How is the Administrative Panel decision implemented? Is the Administrative Panel decision subject to appeal? Are Administrative Panel decisions available to the public? Consistency of decisions Relationship between the UDRP and Court Proceedings What happens if a national court case is initiated during the UDRP proceeding? What happens if a losing domain name registrant files a lawsuit after the Administrative Panel decision has been rendered? What is meant by mutual jurisdiction? 40

5 4.2 Domain Name Dispute Resolution v 14. UDRP Decision Criteria and Application by Administrative Panels What must the Complainant prove under Paragraph 4(a) of the UDRP? Complainant has rights in a trademark or service mark (UDRP, Paragraph 4(a)(i)) Domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights(udrp, Paragraph 4(a)(i)) Domain name registrant has no rights or legitimate interests in the domain name (UDRP, Paragraph 4(a)(ii)) Domain name has been registered and is being used in bad faith (UDRP, Paragraph 4(a)(iii)) New Developments Internationalized domain names Dispute resolution in the new gtlds Second WIPO Internet Domain Name Process Test Your Understanding Resources WIPO Center s web site and publications Annexes 51 A. WIPO Model Complaint 51 B. Index of WIPO UDRP Panel Decisions 61

6

7 4.2 Domain Name Dispute Resolution 1 WHAT YOU WILL LEARN The WIPO Arbitration and Mediation Center (the WIPO Center) is the leading dispute resolution service provider in relation to the alleged abusive registration and use of domain names. From December 1999 through April 2003, the WIPO Center handled over 20,000 domain name cases covering some 25,000 domain names, with new cases being received each day. Approximately 5,000 of these cases were governed by the Uniform Domain Name Dispute Resolution Policy (UDRP), which is the principal policy for addressing this type of dispute on an international level. This module gives an overview of the procedural rules and the substantive criteria of this dispute settlement procedure. Section 1 introduces the policy and technical background that produced the UDRP. It also explains how the domain name system works and how domain names are registered. Sections 2 and 3 describe the history and the objectives of the UDRP and the role of the World Intellectual Property Organization (WIPO) leading to the adoption of the UDRP. Section 4 highlights the principal characteristics and the scope of the UDRP and outlines its principal advantages in comparison to conventional litigation in national courts. Section 5 presents the various stages in the UDRP procedure and the timeframe of a case. Section 6 outlines basic procedural issues for parties to a UDRP proceeding. Sections 7 and 8 contain details concerning the legal aspects of filing or defending a domain name case under the UDRP. Section 9 provides information on fees for the UDRP procedure. Section 10 describes the role of the dispute resolution service provider. Section 11 examines the appointment procedure and role of the Administrative Panels that decide disputes under the UDRP. Section 12 describes the remedies that are available under the UDRP and the timeframe for the decision-making process. It also explains how the Administrative Panel decision is implemented. Section 13 discusses the effect of court proceedings relating to the domain name disputed in the UDRP procedure, and what happens if a party files a

8 2 Dispute Settlement lawsuit after a UDRP Panel decision has been rendered. Section 14 gives an insight into how the UDRP decision criteria have been interpreted by Panels. Section 15 describes recent developments in the area of domain names and domain name dispute resolution, including internationalized domain names, registry-specific dispute resolution policies for new generic top-level domains (gtlds) and the Second WIPO Internet Domain Name Process. Section 16 comprises a series of self-assessment questions to reinforce the reader s comprehension of the module. Section 17 contains a selection of filing resources and further readings on the UDRP. Annexes provide the Model Complaint and the Index of WIPO UDRP Panel Decisions made available by the WIPO Center as part of its case facilities.

9 4.2 Domain Name Dispute Resolution 3 OBJECTIVES On completion of this module, the reader will be able: to appreciate why there was a need for an alternative dispute resolution procedure to combat the abusive registration of trademarks as domain names by third parties; to recognize the specific characteristics of the UDRP; to file a Complaint or a Response under the UDRP; to appreciate how Administrative Panels appointed by the WIPO Center have applied the UDRP.

10

11 4.2 Domain Name Dispute Resolution 5 1. DOMAIN NAMES AND THE DOMAIN NAME SYSTEM 1.1 The development of the domain name system The rapid increase in the number of globally active Internet users makes the Internet an ideal marketplace and advertising location. More than traditional mass communication media, the Internet offers users the opportunity to actively seek the desired information for themselves. Persons or entities planning to use the Internet as a global marketplace or communication platform must enable potentially interested parties to locate them in cyberspace. To facilitate such communication, each computer connected to the Internet is identified by a unique numerical Internet Protocol (IP) address, such as the number How does the domain name system work? It rapidly became evident that, while the use of numerical addresses is an appropriate means of identification between computers, people prefer names to numbers. Thus, an addressing system, the domain name system, was designed to enable users to locate computers through the use of names rather than numbers. A domain name such as <wipo.int> acts as a unique alias for an IP address (a number), to locate a computer site connected to the Internet, in this case the WIPO web site at the IP address The domain name system is essentially a global addressing system. It is the way in which domain names are located and translated into numerical IP addresses, and vice versa, to facilitate identification of a specific web site on the Internet. 1.3 The structure of a domain name The domain name system is hierarchical, featuring multiple levels. Reading from the right to left, each level in a domain name is separated by a dot starting on the right with top-level domains and moving on to second-level and thirdlevel domains. For example, in the domain name <arbiter.wipo.int>, which is the location of the WIPO Center s web site, int is the top-level domain, wipo is the secondlevel domain and arbiter is the third-level domain. arbiter. wipo. int Third-Level Second-Level Top-Level

12 6 Dispute Settlement 1.4 Generic top-level domains (gtlds) 1.5 New gtlds Until November 2000, there were seven generic top-level domains (gtlds). Three of these are open, in the sense that there are no restrictions on the persons or entities that may register names in them. These three open gtlds are: -.com (primarily intended for commercial purposes); -.net (primarily intended for computers or network providers); and -.org (primarily intended for miscellaneous organizations). The other four gtlds are restricted, in the sense that only certain entities meeting specific criteria may register names in them. They are: -.edu (for educational institutions in the United States of America); -.gov (for agencies of the Federal Government of the United States of America); -.int (for certain intergovernmental organizations); and -.mil (for military agencies of the United States of America). On November 16, 2000, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the introduction of the following seven new gtlds: -.aero (for the aviation community); -.biz (for business purposes); -.coop (for cooperatives); -.info (unrestricted); -.museum (for museums); -.name (for personal names); and -.pro (for professionals). Some of these new gtlds are open for registration by the general public ( unsponsored gtlds ), while others are aimed at registration and use by specific user communities ( sponsored gtlds ). The unsponsored gtlds are.biz,.info,.name and.pro, whereas.aero,.coop and.museum are sponsored. The least restricted of the new gtlds is.info, where anyone can register any name. Slightly less open is.biz, which is intended for registrations stated to be used or intended to be used primarily for bona fide business or commercial purposes. The.name gtld is reserved for personal names of individuals (for commercial, as well as non-commercial purposes). The.pro gtld is conceived for professionals, and is so far limited to accountants, lawyers and physicians. The.aero gtld is restricted to members of the aviation community worldwide,.coop to cooperatives and.museum to museums. ICANN plans to further enlarge the number of gtlds.

13 4.2 Domain Name Dispute Resolution Country code top-level domains (cctlds) In addition to the above gtlds, there are 243 country code top-level domains (cctlds), based on the two-letter ISO-Norm 3166 (for example,.br for Brazil,.fr for France,.mx for Mexico), which are administered by nationally designated registration authorities. Some of these domains are open, in the sense that there are no restrictions on the persons or entities who may register names. Others are restricted, in that only persons or entities satisfying certain criteria (for example, domiciled within the territory) may register names in them. Functionally, there is no distinction between the gtlds and the cctlds. A domain name registered in a cctld provides the same connectivity as a domain name registered in a gtld. As noted above, there are open gtlds and cctlds, which contain no restrictions on use, and restricted gtlds and cctlds, which restrict use to persons or entities meeting certain criteria. The WIPO Center offers a cctld database portal on its web site, 1 facilitating online searches for registration and dispute resolution information related to each cctld. 1.7 Second-level domains Under a gtld, second-level domains are registered by the applicant (for example <wipo.int> by WIPO or <microsoft.com> by Microsoft Corporation) with the respective registration authority responsible for the administration of the gtld. Administrators of cctlds often create mandatory second-level domains. For example, in the United Kingdom, the national registration authority Nominet U.K. introduced various second-level domains under the top-level domain.uk, for example.co.uk for commercial enterprises;.ltd.uk for limited companies;.sch.uk for schools or.gov.uk for government bodies. In such cases, it is the third-level domain that may be registered by competent parties. Domain names are registered on a first-come, first-served basis and the open gtlds and cctlds normally do not apply an examination procedure. As a domain name functions as an address, no two entities can have the same domain name under the same top-level domain. It is, however, possible for the same name to be registered by separate entities in different top-level domains. Thus, technically speaking, it is possible for one party to register a term in one toplevel domain, and other parties to register the same term in different top-level domains. 1.8 Third and fourth-level domains Third and fourth-level domains are usually chosen by the registrant of the second-level domain name but, as seen above, certain registration authorities 1 Available at

14 8 Dispute Settlement limit the second and third-level domains to designate, for example, the purpose or locality of the domain. 1.9 The growth in domain name registrations The number of domain names has in recent years undergone spectacular growth. Whereas at the beginning of the 1990s there were only a few hundred domain names registered, by the end of 2002 some 28 million domain names had been registered.

15 4.2 Domain Name Dispute Resolution 9 2. NEED FOR AN ALTERNATIVE DISPUTE RESOLUTION PROCEDURE 2.1 The conflict between domain names and intellectual property rights in signs Originally designed to enable users to locate computers in an easy manner, domain names have gone on to acquire further significance as business identifiers. As a result, domain names have come into conflict with the system of intellectual property rights. 2.2 The phenomenon of cybersquatting Domain name disputes arise largely from the practice of cybersquatting, that is, the pre-emptive bad faith registration of trademarks by third parties as domain names. Cybersquatters exploit the first-come, first-served nature of the domain name registration system by registering names corresponding to trademarks with which they are not connected. As registration of a domain name is a relatively simple procedure, cybersquatters can register numerous variations of such names as domain names. As the holders of these registrations, cybersquatters often put the domain names up for auction, or offer them for sale directly to the company or person connected with the names, at prices far exceeding the cost of registration. Alternatively, they keep the registration and use the name of the person or business associated with that domain name to attract business to their own sites. 2.3 Limitations of court litigation in combating cybersquatting Despite the rapid growth of the Internet over the last decade as a place to do business, there was, until recently, no globally uniform procedure for resolving disputes arising out of domain name registrations. Prior to the establishment of the UDRP, trademark owners had to resort to litigation before the courts to reclaim domain names that had fallen victim to cybersquatting. In view of the complex questions of jurisdiction, applicable law and enforcement that arise when resorting to national judicial systems to resolve disputes arising in the global context of the domain name system, and the resulting delays and costs, traditional court litigation was considered an unsatisfactory solution to the problem. Arguments were presented in support of a reform of the domain name system to include a mechanism for allowing intellectual property owners to rectify abuses of rights in domain name registration in a more efficient manner.

16

17 4.2 Domain Name Dispute Resolution CREATION OF THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP) 3.1 Origins In response to the growing concerns relating to intellectual property issues associated with domain names and the increasing number of abusive domain name registrations, a White Paper was produced by the United States Department of Commerce, 2 which called on WIPO to conduct a study and make recommendations for a uniform approach to resolving trademark/domain name disputes involving cybersquatting (as opposed to conflicts between trademark holders with legitimate competing rights). In addition, the Internet Corporation for Assigned Names and Numbers, a non-profit California-based corporation was formed in 1998 for the purpose of, among other things, addressing the management of the domain name system Final Report of the WIPO Internet Domain Name Process Negotiating a new international treaty was considered too involved a process, and relying on the development of national laws was seen as unlikely to result in an effective mechanism suited to the international nature of these disputes. To resolve domain name disputes, an internationally uniform and mandatory procedure to deal with what frequently developed into cross-border disputes in an efficient manner was needed. With the support of its Member States, WIPO, which is mandated to promote the protection of intellectual property worldwide, conducted extensive international consultations, resulting in the publication of a Report which addressed domain name issues and made recommendations for their resolution. 4 The Final Report of the WIPO Internet Domain Name Process (First WIPO Report) recommended the creation of an online administrative dispute resolution procedure, which would have universal application for all.com,.net and.org registrations. The procedure would therefore apply to any name registered in those gtlds, irrespective of the registrar through which the registration was made and irrespective of the date of registration. WIPO made the following recommendations: 2 Management of Internet Names and Addresses, 63 FED. REG. 31,741 (June 10, 1998), available at 3 Documentation concerning ICANN can be found at ICANN s web site, at 4 The Management of Internet Domain Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process, April 30, 1999; the Report is available at WIPO s web site at

18 12 Dispute Settlement (a) (b) (c) (d) (e) (f) (g) (h) Third parties should be able to challenge domain name registrations and the dispute should be decided by a panel of independent expert decision-makers. The scope of the procedure should be limited to the abusive registration of trademarks as domain names. The legal basis for the procedure should be the domain name registration agreement through which the registrant agrees to submit to the procedure. The procedure should be administered by independent dispute resolution institutions, which would be responsible for the appointment of the panel of decision-makers and for the administration of the procedure. The principal remedies available under the procedure should be limited to the transfer or cancellation of the domain name registration (no monetary damages). Registration authorities should be obliged to implement decisions made under the procedure ordering the transfer or cancellation of a domain name, without the need for a court to review or confirm such decisions. The availability and conduct of the administrative procedure should not deny the parties to the dispute access to national court proceedings, either before, during or after the procedure. The procedure should be quick, efficient, cost-effective and conducted to a large extent online. 3.3 Adoption of the UDRP After consideration and approval by the WIPO Member States, the First WIPO Report was submitted to ICANN for its review. In August 1999, ICANN resolved to adopt the Uniform Domain Name Dispute Resolution Policy, 5 which, essentially, implements the above WIPO recommendations. ICANN also appointed dispute resolution service providers to administer disputes that are brought under the UDRP, the WIPO Arbitration and Mediation Center being the first such dispute resolution service provider. 3.4 Entry into effect of the UDRP The UDRP came into effect on December 1, Since its entry into force, the UDRP has been widely used as a tool to combat the abusive registration of domain names by cybersquatters, with some 7,000 gtld cases filed under the procedure by the end of Uniform Domain Name Dispute Resolution Policy, adopted on August 26, 1999, available at

19 4.2 Domain Name Dispute Resolution Experience of the WIPO Center The WIPO Center was the first domain name dispute resolution service provider to be accredited by ICANN. Since commencing its domain name dispute resolution service in December 1999, through April 2003, the WIPO Center has processed well over 20,000 domain name cases, some 5,000 of which were under the UDRP. These WIPO UDRP cases cover approximately 9,000 domain names and involve parties from over 100 countries. The WIPO Center has a list of some 400 Panelists from over 50 countries, who together have rendered some 4,000 decisions, excluding those cases that were terminated for settlement. The WIPO Center has extensive legal, administrative and information technology resources that provide a solid infrastructure. The Center has administered cases in a number of languages, primarily in English but also in Chinese, French, German, Japanese, Korean, Norwegian, Portuguese, Russian and Spanish, with the possibility to add further languages as required.

20

21 4.2 Domain Name Dispute Resolution PRINCIPAL CHARACTERISTICS AND SCOPE OF THE UDRP 4.1 Which disputes are covered? As recommended in the First WIPO Report, ICANN places two major restrictions on the UDRP. First, the dispute resolution procedure is limited solely to cases of deliberate, bad-faith, abusive registrations (cybersquatting) and leaves the resolution of other trademark disputes to the courts. 6 The UDRP therefore offers relief to trademark owners who have fallen victim to cybersquatting practices, provided they can demonstrate that (UDRP, Paragraph 4(a)): (i) (ii) (iii) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The registrant has no rights or legitimate interests in respect of the domain name; and The domain name has been registered and is being used in bad faith. Second, the UDRP only applies to abusive registrations of trademarks and service marks as domain names. The WIPO recommendations concluded that registrations which violate trade names, geographical indications or personality rights should not per se fall within the definition of abusive registration for the purposes of the UDRP procedure, as intellectual property rights in these categories were less harmonized throughout the world. 4.2 Which top-level domains are governed? The UDRP applies directly to the open gtlds.com,.net and.org as well as to the new gtlds, presently.aero,.biz,.coop,.info,.museum,.name and.pro. The management of cctlds is delegated to national registration authorities that operate the cctlds according to local policies. The UDRP does not apply per se to all cctlds, but only to those where the national cctld registration authority decides to adopt the UDRP on a voluntary basis. By the end of 2002 over 30 cctlds had adopted the UDRP or variations thereof and designated the WIPO Center to provide domain name dispute 6 ICANN, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999), at

22 16 Dispute Settlement resolution services under such Policy. The list of these cctlds is available at the WIPO Center s web site at WIPO also regularly provides, as part of its WIPO cctld Program, advice to cctld registration authorities for the purpose of managing intellectual property in their domains. As part of this activity, WIPO published the WIPO cctld Best Practices for the Prevention and Resolution of Intellectual Property Disputes, which is a set of guidelines for the development of practices and policies for preventing and resolving abusive registrations of protected names. 4.3 What are the major advantages? Compared with conventional court litigation the UDRP has two major advantages. The main advantage of the UDRP procedure is that it typically provides a faster and cheaper way of resolving a dispute regarding the registration and use of an Internet domain name. The procedure is considerably more informal than litigation and the decision-makers are experts in such areas as trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. Practice shows that in the absence of exceptional circumstances it takes on average no more than two months to resolve a UDRP dispute. Another advantage of the UDRP is that, in contrast to national court decisions, which require time-consuming enforcement procedures, a UDRP decision merely needs to be notified to the registrar, which is then required to implement the Administrative Panel finding. 4.4 How does the UDRP become binding on the domain name registrant? The UDRP derives its application from ICANN s authority over the domain name system. ICANN requires all gtld registrars to incorporate the UDRP into their domain name registration agreements as a condition of ICANN s registrar accreditation. Accordingly, all gtld registrants, through their domain name registration agreement, agree to submit to the UDRP procedure. For example, a dispute clause could read as follows: The Registrant agrees to be bound by ICANN s Uniform Domain Name Dispute Resolution Policy ( UDRP ). Any disputes regarding the right to use your Domain Name will be subject to the UDRP. We may modify the Dispute Policy in our sole discretion at any time in accordance with the ICANN Agreement or any ICANN/Registry Policy. Your continued use of our registration services after modification to the UDRP becomes effective constitutes your acceptance of those modifications. If you do not agree to such a modification, you may request that your SLD [second-level domain] name be cancelled or transferred to another registrar.

23 4.2 Domain Name Dispute Resolution What remedies are available? The remedies available under the UDRP consist of the cancellation or transfer of the domain name in dispute. Parties may seek independent recourse in a court of competent jurisdiction before, during, or after a UDRP proceeding. No monetary remedies are available.

24

25 4.2 Domain Name Dispute Resolution OVERVIEW OF THE UDRP PROCEDURE 5.1 Legal framework The UDRP sets out a legal framework for the resolution of disputes between a domain name registrant and a third party over the abusive registration and use of a domain name in a gtld and those cctlds that have adopted the UDRP on a voluntary basis. Proceedings under the UDRP are conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), 7 which set out the procedures and other requirements for each stage of a UDRP case. In addition to the UDRP and Rules, each ICANN-accredited dispute resolution service provider has adopted supplemental rules 8 which complement the UDRP and Rules on certain issues, such as applicable fees. 5.2 Stages in the procedure The basic stages in a UDRP procedure are: (a) (b) (c) (d) (e) Filing of a Complaint with an ICANN-accredited dispute resolution service provider of the Complainant s choice, such as the WIPO Center; Filing of a Response by the person or entity against whom the Complaint was made; Appointment by the chosen dispute resolution service provider of an Administrative Panel comprising one or three persons who will decide the dispute; Issuance of the Administrative Panel decision and the notification thereof to all relevant parties; and Implementation of the Administrative Panel decision by the registrar concerned, should there be a decision that the domain name in question be cancelled or transferred. The following flowchart prepared by the WIPO Center gives a more detailed description of the UDRP procedure. 7 Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, available at 8 See for example, World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (in effect as of December 1, 1999), available at

26 20 Dispute Settlement 5.3 UDRP procedural flowchart Days s 0 Complaint filed with the WIPO Center electronically and in hardcopy Complainant must send or transmit a copy to concerned registrar and Respondent, together with Complaint transmittal coversheet +1 WIPO Center acknowledges receipt Center requests requests concerned registrar concerned to provide registrar specific to details provide concerning specific the details disputed domain concerning name the WIPO Center conducts formalities compliance review following receipt of requested information from registrar Deficiencies notified to Complainant and Respondent; if not remedied within five calendar days, Complaint deemed withdrawn If Complaint non-deficient and payment in required amount has been made, WIPO Center formally notifies Respondent, with a copy to the Registrar, of Complaint in accordance with the Rules, Paragraph 2(a) Formal commencement of UDRP proceeding. Registrar locks registration no later than at this stage.

27 4.2 Domain Name Dispute Resolution Response due within 20 calendar days of formal commencement of the administrative proceeding Default notification sent if Response not filed by deadline; Panel has discretion whether to consider late-filed Response WIPO Center acknowledges receipt or sends default notification +5 to Regardless of whether Respondent defaults or not, WIPO Center proceeds to appoint Administrative Panel of one or three members Panel is required to forward its decision to the WIPO Center within 14 days of its appointment If both Complainant and Respondent designate a single-member Panel, the WIPO Center will make an appointment from its published list. If either the Complainant or Respondent designates a three-member Panel, the WIPO Center will appoint a three-member Panel from its list. In so doing, the WIPO Center will attempt to appoint one of three candidates nominated by the Complainant and one of three nominated by the Respondent. The Presiding Panelist in a three-member Panel is appointed taking into consideration the parties preferences, concerning five candidates proposed by the WIPO Center. +3 Center formats and notifies decision to parties, concerned registrar and ICANN within 3 days after receipt Pursuant to Policy, Paragraph 4(k), the registrar implements a decision in favor of the Complainant after ten business days of receipt, unless it receives official documentation from the Respondent that the Respondent has commenced a lawsuit against the Complainant in a mutual jurisdiction to which the Complainant has submitted for this purpose. +10 Decision implemented by registrar

28

29 4.2 Domain Name Dispute Resolution PROCEDURAL ISSUES 6.1 Does a party s submission have to be prepared and submitted by a lawyer? No. While the assistance of a lawyer may be helpful, there is no requirement that the Complaint or the Response be prepared or submitted by a lawyer. Accordingly, there is no requirement that the Complaint be certified or notarized, although the original hardcopy of the Complaint must be signed by the Complainant or the Complainant s authorized representative, as the case may be. 6.2 Which party carries the burden of proof and what is the standard of proof? The UDRP places the burden of proof for the case on the Complainant. In order to meet its burden of proof, it is not sufficient for a Complainant to make bald assertions of fact. The Complainant is required to substantiate its claims beyond mere allegations. In general, the standard imposed by Panels is proof on the preponderance of evidence, that is, a fact is considered established when it is more likely than not that the fact is true. Account is taken of possible default and of reasonable limitations for the parties in proving facts that are known only to the other party. 6.3 Are in-person hearings provided for? Paragraph 13 of the Rules makes it clear that there shall be no in-person hearings (including hearings by teleconference, videoconference and web conference), unless the Administrative Panel determines, only as an exceptional matter, that such a hearing is necessary in order for it to make its decision. No in-person hearing has been held in any WIPO proceeding to date. 6.4 Is the UDRP proceeding confidential? Following the formal commencement of a UDRP proceeding, the provider publishes the following case-related information on its web site: the domain name(s) in issue, the date of formal commencement of the proceeding and the case number assigned by that provider. Unless the Panel has decided to redact certain portions of its findings, the WIPO Center publishes in full on its web site all decisions rendered under the UDRP.

30

31 4.2 Domain Name Dispute Resolution UDRP COMPLAINT 7.1 Where can a Complaint be submitted? The Complaint may be submitted to any accredited dispute resolution service provider. For gtlds these providers are accredited by ICANN. For cctlds which have adopted the UDRP, the providers are accredited by the registration authorities of the cctld in question. Once a Complainant selects the dispute resolution service provider, it must ensure that the Complaint conforms not only to the requirements specified in the Rules, but also to those requirements specified in the chosen provider s supplemental rules. 7.2 Is there a standard format in which a Complaint should be submitted? While there is no standard format of Complaint prescribed by ICANN, the WIPO Center has prepared a model Complaint together with filing guidelines which parties may wish to use when filing a UDRP Complaint with the WIPO Center. The use of the model as a basis for the preparation of a party s Complaint does not preclude the possibility of that Complaint being found deficient following the WIPO Center s formalities compliance review, nor does reliance on the model guarantee a Complainant s success on the merits. The majority of WIPO Complainants use the WIPO model Complaint. Under the Rules, Complaints must be submitted in hardcopy and in electronic format. In order to facilitate electronic filing, the WIPO Center offers the option either to download and complete the WIPO model Complaint as a word document and submit it to the WIPO Center as an attachment or, to submit the Complaint directly online using the WIPO online filing facility. Hardcopies (original and four copies) of the Complaint including all annexes (for example, documentary or other evidence) should be sent by postal or courier service to the dispute resolution service provider. The original hardcopy must be signed by the Complainant or the Complainant s authorized representative. At the same time as the Complaint is submitted to the dispute resolution service provider, a copy of the Complaint should also be sent to the Respondent and, under the WIPO Supplemental Rules, to the concerned Registrar. 7.3 In what language should the Complaint be submitted? Unless the Complainant and the Respondent agree otherwise or unless specified otherwise in the domain name registration agreement, the Complaint must be submitted in the same language as the domain name registration agreement. Attachments to the Complaint may be in their original language, subject to the

32 26 Dispute Settlement authority of the Panel to order any such attachment to be translated in full or in part. The final authority to determine the language of the proceeding lies with the Administrative Panel. 7.4 What information should be included in the Complaint? The information that must be included in the Complaint is described in Paragraph 3 of the Rules. It is also itemized in the WIPO model Complaint. The formal requirements consist of procedural information, a description of the facts, and legal reasoning on the basis of the substantive decision criteria. As to these criteria, Paragraph 3 provides, inter alia, that the Complainant shall describe, in accordance with the UDRP, the grounds on which the Complaint is made including, in particular: (a) (b) (c) the manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and why the Respondent (domain-name holder) should be considered as having no rights to, or legitimate interests in respect of the domain name that is the subject of the Complaint; and why the domain name should be considered as having been registered and being used in bad faith. The UDRP contains nonexhaustive examples of scenarios which are normally considered to constitute such bad faith. Other information to be provided includes indications as to whether the Complainant elects to have the dispute decided by a single-member or a threemember Panel and, in the event that the Complainant elects a three-member Panel, the names of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-accredited provider s list of Panelists). The WIPO Center also makes available on its web site an online legal Index of WIPO decisions rendered under the UDRP in order to assist parties in preparing their submissions. 7.5 Can a Complaint include more than one domain name? Under Paragraph 3(c) of the Rules, the Complaint may relate to more than one domain name, so long as the person or entity that is the registrant of the domain names specified in the Complaint is effectively the same.

33 4.2 Domain Name Dispute Resolution Where can one access information on the registrant of a domain name? Certain registration information can be obtained for domain names registered in.com,.net,.org,.biz,.info and.name by conducting a WHOIS search at For other domain names, or for additional information, the concerned registrar s WHOIS service may be used.

34

35 4.2 Domain Name Dispute Resolution UDRP RESPONSE 8.1 Is there a standard format in which a Response should be submitted? The information that must be included in the Response is described in Paragraph 5 of the Rules. In addition, the WIPO Center has prepared a model Response and response filing guidelines which parties may wish to use. The use of the model Response as a basis for the preparation of a party s Response is not required and does not guarantee a Respondent s success on the merits. 8.2 What information should be included in the Response? The information that must be included in the Response is described in Paragraph 5 of the Rules. This provision states, inter alia, that the Respondent shall respond specifically to the statements and allegations contained in the Complaint and include any and all bases for the Respondent to retain registration and use of the disputed domain name, in other words, to convince the Administrative Panel that the Complainant has not established the three cumulative criteria described in paragraph 7.4 above. 8.3 How many days does a Respondent have to file a Response? According to Paragraph 5(a) of the Rules, the Respondent must file its Response within 20 days of the commencement of the UDRP proceeding. A UDRP proceeding is deemed to have commenced once the dispute resolution service provider has formally notified the Complaint in accordance with Paragraphs 2(a) and 4 of the Rules. 8.4 How can a Respondent demonstrate rights to or legitimate interests in the domain name that is the subject of the Complaint? Paragraph 4(c) of the UDRP states that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the domain name registrant s rights or legitimate interests in the domain name for the purposes of the UDRP: (i) before any notice to the domain name registrant of the dispute, the registrant s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

36 30 Dispute Settlement (ii) (iii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or the domain name registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 14.4 provides further information on how the above examples have been interpreted by Administrative Panels. 8.5 What happens if the Respondent fails to submit a Response or submits its Response after the deadline? If the Respondent does not file its Response by the deadline specified by the dispute resolution service provider, the Respondent will be considered in default. Regardless of the Respondent s default, the dispute resolution service provider will proceed to appoint the Administrative Panel. The Panel will be informed of the Respondent s default. The Panel will then decide the dispute based on the information available to it and may draw such inferences as it deems appropriate from the Respondent s failure to submit a Response, for example as to the existence of facts asserted by the Complainant and the validity of the Complainant s conclusions therefrom. In any event, the Administrative Panel will normally assert its independent responsibility to make its determination on the case. If the Response is filed after the deadline, the Panel will decide whether to admit and consider the late-filed Response.

37 4.2 Domain Name Dispute Resolution UDRP FEES 9.1 How are the dispute resolution service provider s fees for a domain name dispute calculated? The amount of the lump sum fee depends on two criteria: the number of disputed domain names and the number of Panelists (one or three). The fee consists of an amount to be retained by the provider as an administration fee and an amount to be paid to the Panelist(s). In terms of who pays: in the case of a single-member Panel, the full fee is paid by the Complainant. If it is a three-member Panel, requested by the Complainant, the full fee is due from the Complainant. Where it is the Respondent who requests a three-member Panel, the fee is split equally between the Complainant and the Respondent. The full schedule of the fees charged by the WIPO Center is available at:

38

39 4.2 Domain Name Dispute Resolution ROLE OF THE UDRP DISPUTE RESOLUTION SERVICE PROVIDER 10.1 Procedural involvement 10.2 Impartiality The dispute resolution service provider s role is to administer the proceedings, which includes verifying that the Complaint satisfies the formal requirements of the UDRP, the Rules and the concerned provider s supplemental rules, coordinating with the concerned registrar to verify that the named Respondent is the actual registrant of the domain name in issue, notifying the Complaint to the Respondent, sending out case-related communications, appointing the Administrative Panel and otherwise ensuring that the UDRP proceeding runs smoothly and expeditiously. The dispute resolution service provider is independent and impartial. It does not decide the dispute between the parties. As an administrative body, it can provide guidance on the procedural aspects of the UDRP, the Rules and the provider s supplemental rules, but cannot give any views about the strengths and weaknesses of a party s case.

40

41 4.2 Domain Name Dispute Resolution ROLE OF THE UDRP ADMINISTRATIVE PANEL 11.1 What is an Administrative Panel? An Administrative Panel is composed of one or three independent and impartial persons appointed by the dispute resolution service provider to decide the dispute in accordance with the UDRP and the Rules. The Administrative Panel is independent of the dispute resolution service provider, the parties, the registrar concerned and ICANN Who are the Panelists? The persons appearing on the WIPO Center s list of Panelists have been selected on the basis of their well-established reputation for impartiality, sound judgement and experience as decision-makers, as well as their substantial experience in the areas of trademark law, electronic commerce and Internetrelated issues. In order to ensure transparency and to make available full information for the parties, the WIPO Center not only provides the names of its Panelists but also their full biographical details, which the WIPO Center publishes at arbiter.wipo.int/domains/panel/. The WIPO Center s list is truly international, consisting of some 400 Panelists from over 50 countries When is the Administrative Panel appointed? The Administrative Panel is appointed after the filing of the Response, or following the due date on which the Response should have been filed How is the Administrative Panel appointed? The Administrative Panel is appointed by the dispute resolution service provider in the following manner: (a) (b) If both the Complainant and Respondent indicate that they would like the dispute to be decided by a single-member Panel, the provider will appoint the Panelist from its list of domain name Panelists. If the Complainant designates a three-member Panel and the Respondent designates a single-member Panel, or vice versa, then the dispute resolution service provider will appoint a three-member Panel. In so doing, the dispute resolution service provider will try to appoint one of the candidates nominated by the Complainant and one of the candidates nominated by the Respondent. If it is unable to do so, for example because of Panelist unavailability,

42 36 Dispute Settlement (c) the provider will make an appropriate appointment from its list of Panelists. The third Panelist, or presiding Panelist, will be appointed on the basis of preferences indicated by the parties from among a list of five candidates that will have been provided to them by the dispute resolution service provider. If the Respondent fails to file a Response, then the dispute resolution service provider will appoint the Administrative Panel in accordance with the number of Panelists designated by the Complainant. If the Complainant designated a three-member Panel, the dispute resolution service provider will try to appoint one of the candidates nominated by the Complainant, failing which it will make the appointment from its published list. It will make the appointment of the other two Panelists from its list of Panelists Appointment considerations In appointing a Panel for the resolution of a UDRP proceeding, the WIPO Center takes into account a number of considerations, including the nationality of the parties, the language of the proceeding, the experience of the Panel, the geographical location of the Panelist, and prior case involvement by the Panelist with the parties. The WIPO Center also requires the Panelist to confirm his or her independence of each of the parties and disclose any and all facts that should be considered prior to such appointment.